PTAB

IPR2014-00031

Google Inc v. Be Technology LLC

Key Events

Petition

petition

Title: System and Method for Remotely Accessing and Distributing Information
Brief Description: The ’290 patent describes a client-server system for the remote storage and retrieval of user-specific files. The system utilizes a central server that stores a unique "user profile" (containing links and bookmarks) and a "user library" (containing files like documents and media) for each user, allowing them to access their personalized information from any connected client computer.

Prior Art Relied Upon: Kikinis (International Publication No. WO 97/09682).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Kikinis discloses every limitation of claims 2 and 3. Kikinis describes a document management system allowing users to access electronic documents from any location via the Internet. Petitioner mapped Kikinis's "user station" to the claimed client computer, the "User's Provider" server to the claimed server, the user's "home page" to the "user profile," and the user-specific "data bases" (for e-mail, faxes, etc.) to the "user library." The home page contains on-screen links that allow a user to access files within their specific databases, thus teaching a user profile with a link to a file in the user library.
- Key Aspects: The argument centered on a direct, one-to-one correspondence between the components described in Kikinis and the elements recited in the challenged claims, asserting that Kikinis taught a complete system for remote, profile-based file access.

Prior Art Relied Upon: Kikinis (WO 97/09682).
Core Argument for this Ground:
- Prior Art Mapping: This ground was presented as an alternative to anticipation. Petitioner argued that if the Board were to find that Kikinis does not explicitly disclose a user profile link that directly accesses a file (because some examples in Kikinis show a link opening an intermediate interface), such a configuration would be an obvious variation. Kikinis explicitly teaches that its home page has "on-screen links to electronic documents."
- Motivation to Combine (for §103 grounds): A POSITA would be motivated to implement direct file access from a link, as it would be a more convenient and efficient design for a user accessing documents remotely. Modifying an interface link to a direct file link was presented as a simple and predictable design choice.
- Expectation of Success: A POSITA would have a high expectation of success in making this minor modification, as it involved routine programming of hyperlinks, a well-understood technology at the time.

Prior Art Relied Upon: Subrahmanyam (Patent 5,732,214) and admissions within the ’290 patent.
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Subrahmanyam discloses a robust back-end system for remote file archiving that is universally accessible. It describes a "profile database server" that stores a "subscriber profile" and archived files ("user library") for multiple users. However, Subrahmanyam does not explicitly disclose a graphical user interface (GUI) with clickable links, such as a web browser.
- Motivation to Combine (for §103 grounds): The ’290 patent’s own specification provides the motivation by admitting in its "Background of the Invention" that "Internet users typically employ browser applications" to locate and view files and that browsers were "useful for accessing desired files and web sites." A POSITA, seeking to implement the archiving system of Subrahmanyam, would combine its teachings with the ubiquitous browser interface described as common knowledge in the ’290 patent itself.
- Expectation of Success: Combining a known back-end archiving system with a common front-end browser interface would predictably result in a functional system for accessing remote files.

Prior Art Relied Upon: Subrahmanyam (Patent 5,732,214) and Kikinis (WO 97/09682).
Core Argument for this Ground:
- Prior Art Mapping: This ground presented a similar argument to Ground 3 but used an explicit prior art reference (Kikinis) instead of patent admissions for the missing GUI element. Subrahmanyam provided the back-end architecture for storing user profiles and file libraries on a server, while Kikinis provided the well-known browser-based GUI for accessing such remote data.
- Motivation to Combine (for §103 grounds): Subrahmanyam explicitly states that "many possible specific implementations of user interfaces" could be used with its system. A POSITA seeking a suitable interface would look to analogous systems like Kikinis, which taught using a browser to provide a user-friendly GUI for remote document access. The combination would create a more complete and commercially viable system.
- Expectation of Success: Integrating the known browser interface from Kikinis with the archiving system of Subrahmanyam would have been a straightforward task for a POSITA with a predictable outcome of improved usability.

Petitioner argued that the broadest reasonable construction of the claim terms must be governed by the explicit definitions provided within the ’290 patent’s specification.
The patent owner acted as its own lexicographer by defining approximately 20 terms, including critical claim terms such as "Browser," "Client Computer," "Computer," "File," "Profile," and "Server." Petitioner contended these explicit definitions should be dispositive for claim construction during the proceeding.

Petitioner requested the institution of an inter partes review and the cancellation of claims 2 and 3 of the ’290 patent as unpatentable.